December 1, 2008

A comment this evening by Jill Jalen goes a long way to solve the mystery raised in our post “got jugs?” (July 30, 2008). Experts on breasts, babies, and trademark law — along with those interested in jugs and lawyer antics — all wondered why the California Milk Processor Board wanted Alaskan artist and breastfeeding advocate Barbara Holmes to stop using the slogan “got breastmilk?” on her onesies and infant t-shirts. They said Holmes’ slogan infringed on their “got milk?” trademark, but that seemed unlikely. Jill’s Comment brings things into better focus: On October 6, 2008, the Board’s lawyers, Knox Lemmon Anapolsky LLP, filed a trademark application with the PTO for a mark that:

“consists of the wording ‘got breastmilk?’ in all lower case letters in Phenix American font.”

According to the TARR status report for the as-yet-unassigned claim with the Serial Number 77586468, the Board intends to use the “got breastmilk?” mark with the following products:

Even this weblog said the “attack on Barbara Holmes and her onesies is silly as a matter of law and one more example that we’ve become an ‘overlawyered’ nation.” However, we always caution others who mock the conduct of otherwise competent lawyers that we might not know all the pertinent facts (or motives), and that more information might indeed show us that dollars were at stake and the action was defensible.

That seems to be the case here – – the Milk Board apparently wanted to protect more than its “got milk?” franchise. Nonetheless, if Stephen Byers and the other lawyers at Knox Lemmon had trouble with Holmes’ logo, they should be even more worried about this baby onesie product from The Mom’s Boutique in Oshkosh, Wisconsin, which appears to use the same font as the mark in the new application, as well as the original “got milk?” campaign:

Maybe trademark experts will help us determine whether the prior uses by the breastmilk advocates are a bar to the Milk Board’s application for a mark on “got breastmilk?” Naturally, if this new product line is projected to be a cash cow, CMPB might be willing to use a little monetary suasion to obtain the rights to “got breastmilk?”.

I wouldn’t be so quick to give the Milk Processor Board or their lawyers credit for such foresight. Based on their trademark application it is very possible that they had no interest in broadening their franchise until AFTER they encountered Ms. Holmes. And, under tradtional principles of trademark law the Milk Processor Board may be stepping on Ms, Holmes legal toes if they use the phrase on baby products.

Hi, John. Thanks for commenting. I actually had a sentence in an earlier draft of this post suggesting that Holmes’ onesies might have given the Board the idea for the product line. Not being mind-readers, we pundits have to do a lot of assuming and presuming. I decided merely to ask the experts like yourself to tell us what the prior use by Holmes and others might mean for the trademark application on “got breastmilk?” Another issue is when or whether they really have to have such a line of products to get TM protection. Applying for the mark might be just another way of trying to stop the use of the phrase despite not have any strong argument that it weakens the original “got milk?’ trademark.

I am Ms. Holmes and I think they want it so they can go after people like me. They didn’t have a case and are leaving me alone now. They also see the $ maker it could be and want to cash in. It’s all just big business and I will be very disappointed if they get approved for this ridiculous trademark claim. Unless they are planning to bottle and sell breastmilk it makes no sense for them to own it!

Hello, Barbara. Thanks for stopping by and giving us your perspective. It will be interesting to see what your lawyer thinks about how to play the fact that you were using the term before the Board either used it or applied for the mark.

What’s funny is that their cease and desist letter gave your mark national recognition — far greater than before the Board tried to stop you. Best wishes as the story unfolds further.

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